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In Brief—Updates and Interesting Items of Note

January 26, 2016: Limelight Networks, Inc. filed a petition for a writ of certiorari with the U.S. Supreme Court, asking it to review the Federal Circuit's en banc opinion holding that a defendant may be held liable for directly infringing a method claim based on the collective performance of its steps by multiple independent parties (under certain expanded conditions). We reported on the Federal Circuit's en banc decision in our December 2015 newsletter under "Eye on the Courts." See Akamai Technologies, Inc. v. Limelight Networks, Inc.

January 22, 2016: The Bilski Blog updated its post-Alice federal court statistics concerning 35 U.S.C. §101 (patentable invention) invalidations through December 31, 2015. Nationwide, claims were invalidated in 150 out of 208 decisions (72%). Of these, district courts invalidated claims in 128 out of 185 decisions (69.2%), and the Federal Circuit upheld Section 101 invalidations in 22 out of 23 decisions (95.7%). We reported on this issue in our December 2015 article, entitled "Down the Rabbit Hole: Trends in Software Patent Court Decisions Post-Alice."

January 21, 2016: J. Carl Cooper and eCharge Licensing LLC filed a petition for a writ of certiorari with the U.S. Supreme Court, asking it to analyze the constitutional validity of new post-grant patent proceedings (e.g., inter partes review). Specifically, the Petitioners argue these proceedings violate Article III Separation of Powers principles by allowing an executive agency to invalidate issued patent claims, including those owned by parties embroiled in infringement disputes pending in federal court. The Petitioners also suggest the Supreme Court might address these "larger [constitutional] issues" at the same time it reviews statutory and discretionary matters related to post-grant proceedings in Cuozzo Speed Technologies, LLC v. Lee (cert. granted January 15, 2016). We reported on the Cooper case in our December 2015 article entitled "On the Watch List: Federal Circuit Rejects Constitutional Challenge to IPRs in MCM Portfolio v. Hewlett-Packard Co." SeeCooper v. Lee.

B. Interesting Items of Note:

March 7, 2016: The Federal Circuit, in a case of first impression, recognized (in a split decision) a patent agent privilege to protect communications between those agents registered to practice before the Patent Office and their clients. However, the scope of the privilege is limited, and excludes communications that are not "reasonably necessary and incident to the prosecution of patents before the Patent Office." For example, the opinion states that communications with a patent agent who is offering an opinion on the validity of another party's patent in contemplation of litigation or for the sale/purchase of a patent, or on infringement, are not protected. Previously, district courts were split on the issue of an independent patent agent privilege, but generally agreed that communications with a patent agent working under an attorney's supervision were protected. See In re Queen's University at Kingston.

February 17, 2016: Carnegie Mellon University and Marvell Technology Group Ltd. announced a $750 million settlement—ending the university's long-running patent infringement lawsuit (filed in 2009) related to hard drive technology. The accord follows in the wake of a Federal Circuit decision finding that the $1.17 billion in damages awarded by a Pittsburgh jury (increased to $1.54 billion by U.S. District Judge Nora Barry Fischer to reflect Marvell's alleged willful infringement, plus interest) should be significantly reduced, but that Marvell must still pay at least $278.4 million in damages (a royalty of $0.50 per chip imported into the United States) plus any damages resulting from additional chips not imported into the United States (but ultimately the subject of a domestic "sale"). According to Carnegie Mellon, the proceeds of the settlement will be divided between the inventors and the university.

February 10, 2016: Former San Diego Chargers and Buffalo Bills linebacker Shawne Merriman settled his trademark infringement and unfair competition dispute with Nike, Inc. Merriman's Lights Out Holdings LLC had filed suit in April of 2014, alleging that the athletic apparel giant was improperly using "Lights Out" (a mark obtained by Merriman from a prior registrant in 2007) without his permission.

January 6, 2016: U.S. District Judge William H. Orrick, III ruled that non-human animals cannot be "authors," and thus lack standing to sue under the Copyright Act. The decision arose from a suit filed by People for the Ethical Treatment of Animals (PETA), which sought to represent Naruto (a crested macaque) in seeking ownership rights in a self-portrait (i.e., a "selfie") the animal took in 2011 on the Indonesian island of Sulawesi with a camera owned by the defendant, photographer David Slater. While Slater owns a British copyright for the photograph, that he asserts should be honored worldwide, the U.S. Copyright Office has taken the position that "a photograph taken by a monkey" cannot be copyrighted.

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